[Case Review].
Plaintiffs: Microsoft Corporation; Defendant: Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Review and Adjudication Board).
The disputed trademark is "PowerPoint", which is designated for use in Class 42: computer services, i.e., software whose content is used to display graphics and cloud computing services that access remotely stored data for such applications. The Trademark Review and Adjudication Board held that although "PowerPoint" was a file format developed by Microsoft, after a long period of use, the relevant public had formed a correspondence with the slide presentation, and it was a common name conventionally accepted on software goods, and the relevant public would not use it as a distinctive mark, and the use of the disputed trademark in computer services lacked distinctiveness.
[Hanji Lawyer on Law].
In 1999, Microsoft applied for the registration of the trademark "PowerPoint" on computer software and other goods in Class 9, which was approved and registered by the Trademark Office in 2000 and is still in effect. It can be seen that "PowerPoint" did not constitute a generic name for presentation software at least 2000.
Since 2000, although the relevant public awareness of "PowerPoint" presentation software has become more and more high, it has not severed the unique correspondence between "PowerPoint" and Microsoft in the presentation software commodity, making it into the public domain, on the contrary, the connection between the two has become closer. At the same time, there is no evidence that other operators in the same industry use "PowerPoint" as a trade name or software format.
At present, there are different registered trademarks such as "Keynote", "Slide", and "WPS" on related products. In the absence of evidence from the Trademark Review and Adjudication Board, the claim that "PowerPoint" is a generic name on presentation software goods cannot be supported.
Based on the fact that the evidence in the case is insufficient to prove that "powerpoint" has become a generic name of the software, the Disputed Trademark is designated for use in computer services and other items, which can play the role of identifying services** and has distinctive characteristics. Accordingly, the court ruled to revoke the respondent's decision and order the Trademark Review and Adjudication Board to make a new ruling.
[Hanji lawyer reminds].
Conventional generic names should generally be judged on the basis of the general recognition of the relevant public nationwide, but this does not mean that the names widely used or recognized by the public necessarily constitute conventional generic names.
In this case, although the "PowerPoint" presentation software was widely used by the relevant public, this popularity did not sever the unique correspondence between "PowerPoint" and Microsoft Corporation in terms of presentation software products, making it enter the public domain, on the contrary, the connection between the two was closer. At the same time, there is no evidence that other operators in the same industry use "PowerPoint" as a trade name or software format. Therefore, even if the "PowerPoint" presentation software trademark has a certain degree of popularity, it cannot be determined that it is a conventional generic name, let alone that the trademark lacks distinctiveness in the use of computer services related to it.
The judgment in this case enriches the judicial practice of the recognition of generic names of commodities, helps to better safeguard the legitimate rights and interests of business operators, and avoids the generalization tendency of the issue of generic name recognition.